GPZ Technology, Inc. v. Aleksandr Vedmidskiy / Private Person
Claim Number: FA1504001612935
Complainant is GPZ Technology, Inc. (“Complainant”), represented by Maulin V. Shah of UDRPro, LLC, North Carolina, USA. Respondent is Aleksandr Vedmidskiy / Private Person (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gpz.com>, registered with Registrar of Domain Names REG.RU LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2015; the Forum received payment on April 6, 2015. The Complaint was received in both Russian and English.
On April 6, 2015, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <gpz.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 7, 2015, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of April 27, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gpz.com. Also on April 7, 2015, the Russian language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant owns common law rights in the GPZ mark, as established through its continuous use of the mark, advertising expenditures, and widespread consumer recognition.
2. Complainant is a leader in customized software solutions and development and uses the GPZ mark in connection with its goods and services. The <gpz.com> domain name is identical to the GPZ mark. The domain name contains the Complainant’s mark in full and adds a generic top-level domain (“gTLD”) “.com” to the domain name.
3. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as evidenced by the WHOIS record for the <gpz.com> domain name. Respondent’s lack of rights or legitimate interests in the disputed domain name is made further evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website with no content, merely a statement noting “This website is not available.” See Compl., at Attached Ex. 27. Additionally, the disputed domain name was fraudulently transferred to Respondent, which is further evidence that Respondent lacks rights and legitimate interests.
4. Respondent has engaged in bad faith registration and use of the <gpz.com> domain name. Respondent uses the disputed domain to resolve to a blank or inactive page. Failure to use a domain name actively is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Further, Respondent’s wrongful acquisition of the disputed domain name through hacking disrupts Complainant’s business activities and establishes bad faith registration and use under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings in Russian.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
1. Complainant is a United States company that is a leader in customized software solutions and development and uses the GPZ mark in connection with its goods and services.
2. Complainant owns common law rights in the GPZ mark, as established through its continuous use of the mark, advertising expenditures, and widespread consumer recognition. Complainant has had those trademark rights since at least 1996.
3. The <gpz.com> domain name was originally registered by Complainant on March 12, 1996. Complainant owned it and actively used it in its business from that date then until early in 2015. Between January 1, 2015 and February 12, 2015 and established on the evidence, a third party believed to be Respondent, hacked Complainant’s computer system and as a result the registration of the domain name was transferred to Respondent. It now resolves to a website with no content and merely a statement noting “This website is not available.” Additionally, the disputed domain name was fraudulently transferred to Respondent, which is further evidence that Respondent lacks rights and legitimate interests.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. It is now well established that the Policy does not require that Complainant’s trademark be registered by a government authority or agency to establish rights in the mark under ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant argues it has established a secondary meaning in the GPZ mark and asserts common law rights in the mark, as established through its continuous use of the mark, advertising expenditures, and widespread consumer recognition. Complainant is a leader in customized software solutions and development and uses the GPZ mark in connection with its goods and services. Complainant states that it has been operating under the GPZ mark since at least 1996, and was the original registrant of the <gpz.com> domain name. See Compl., at Attached Ex. 5. Complainant contends that it has spent over $100,000 since 1996 promoting its business activities under the GPZ trademark. In its peak years, Complainant states that its business generated over $300,000 in revenue. Complainant has submitted extensive evidence to establish its common law trademark rights and the Panel accepts that evidence. This Panel finds on the evidence that Complainant has established secondary meaning in its mark, and thus finds that Complainant owns common law rights in the GPZ mark and has owned them since at least 1996, satisfying the initial requirement of Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GPZ mark. Complainant argues that the <gpz.com> domain name is identical to the GPZ mark and the Panel agrees. The domain name contains the Complainant’s mark in full and adds a gTLD “.com” to the domain name. Prior panels have found that the addition of a gTLD does not serve adequately to distinguish the disputed domain name from the relevant mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel determines that the disputed domain name is identical under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GPZ common law
trademark and to use it in its domain name;
(b) Respondent’s disputed domain name resolves to a website with no content and merely a statement noting “This website is not available.” The disputed domain name was fraudulently transferred to Respondent, which is further evidence that Respondent lacks rights and legitimate interests;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent is not commonly known by the disputed domain name, as evidenced by the WHOIS record for the <gpz.com> domain name. The Panel notes that the WHOIS information for the disputed domain name reveals that “Aleksandr Vedmidskiy / Private Person” is the current registrant of record. See Compl., at Attached Ex. 28. As Respondent has not provided evidence to the contrary, the Panel agrees that Respondent lacks rights to the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(e)Complainant submits that Respondent’s lack of rights or legitimate interests in the disputed domain name is made further evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website with no content, merely a statement noting “This website is not available.” See Compl., at Attached Ex. 27. Complainant asserts that Respondent’s failure to use the domain name is not a bona fide offering of goods or services under Policy ¶4 (c)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel agrees that as Respondent has failed to demonstrate a preparation to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, Respondent has not established rights or legitimate interests in respect of the domain name pursuant to Policy ¶ 4(a)(ii);
(f) Additionally, Complainant alleges that the disputed domain name was fraudulently transferred to Respondent after Complainant was hacked, which is further evidence that Respondent lacks rights and legitimate interests. The Panel notes that Complainant has included a police report of the alleged hacking and illegal transfer of the disputed domain name at Complainant’s Attached Exhibit 15–16. Previous panels have found in favor of complainants whose domain names were fraudulently transferred. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the same domain name is a factor in considering the respondent’s rights or legitimate interests in the domain name); see also Gryphon Internet, LLC v. thank you corp. / Jon Shakur, FA 1405610 (NAF Oct. 11, 2011) (“Complainant has produced documents showing its purchase of the Domain Name, that the site was a thriving business until August 2011, that the site came under attack and the theft of the Domain Name was reported to the police in August 2011…On the balance of probabilities and the evidence before it the Panelist prefers the account of the Complainant and holds that, as it appears that the Respondent is now in control of a stolen domain name which it has not yet used, the Respondent cannot have any rights or legitimate interests in the name.”). The Panel finds that Complainant’s allegations and supporting evidence are sufficient to find that Respondent lacks rights or legitimate interests in respect of the domain name pursuant to Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, while Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant asserts that Respondent uses the disputed domain name to resolve to a blank or inactive page. Complainant argues that Respondent uses the disputed domain to resolve to an inactive page featuring no content, and a statement noting “This website is not available.” See Compl., at Attached Ex. 27. Complainant asserts that failure to use a domain name actively is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). As Respondent has failed to make an active use of the disputed domain name after it was acquired by Respondent on or around February 12, 2015, the Panel finds bad faith registration under Policy ¶ 4(a)(iii).
Further, Complainant alleges Respondent’s wrongful acquisition of the disputed domain name through hacking establishes bad faith registration and use. Complainant contends that its corporate website has been removed, which results in significant disruption of its email access and its ability to communicate with customers and potential clients. Complainant has adduced evidence to substantiate these matters and the Panel accepts that evidence. Previous panels have found that disruption of a Complainant’s business activities leads to a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See Votorantim Participações S.A. v. Carlos Navarro / NetStructure, FA 1456005 (Nat. Arb. Forum Sept. 25, 2011) (finding bad faith under Policy ¶ 4(a)(iii) where respondent registered the disputed domain for itself instead of complainant, which caused disruption to complainant business as its corporate website and email were disrupted). The Panel therefore finds further evidence of bad faith registration under Policy ¶ 4(a)(iii).
In addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the GPZ mark and its conduct since the registration, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gpz.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 11, 2015
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